We strategically approach the petitions for IPRs, CBMs and PGRs through the lens of the broader dispute between the parties. We know that petitions and responses may not only effectively resolve substantive validity disputes, but also impact critical claim construction and infringement positions advanced in licensing discussions and litigation. For example, patent owner preliminary responses may avoid institution but also risk weakening infringement theories.

We have accomplished several rare feats in PTAB practice using our deep knowledge of patent law. For example, we have invalidated a patent’s claims using the disclosure of an earlier patent family member after breaking the priority chain between them. On the patent-owner side, we have defeated an anticipation challenge by proving non-enablement of the prior art. We also have secondary considerations victories on both sides of the “v”—having successfully preserved validity by establishing secondary considerations of non-obviousness and defeated robust attempts by patent owners to do the same thing.

All of this has earned us the trust of patent owners seeking to defend the validity of their patents without sacrificing commercially relevant claim scope and of accused infringers seeking to invalidate patents asserted against them in high-stakes cases. 

And, our fight does not end at the PTAB. As with any trial, the PTAB record must be developed to win at the appellate level. Not only have our clients enjoyed Federal Circuit affirmances, but we have also handled some of the relatively rare appeals in which the Federal Circuit reversed the PTAB, leading to judgments favoring our clients.